The Complainant is Enrique Salinas Pérez of Monterrey, Nuevo León, Mexico, represented by Vite Toxqui & Castro, S.C., Mexico.
The Respondent is Buydomains.com, Inventory Management of Waltham, Massachusetts, United States of America, represented by NameMedia, Inc., United States of America.
The disputed domain name <solanum.com> is registered with eNom, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 2011. On November 8, 2011, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the disputed domain name. On November 8, 2011, eNom Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 10, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 30, 2011. The Response was filed with the Center on November 30, 2011.
The Center appointed Andrew D. S. Lothian, Kiyoshi Tsuru and David E. Sorkin as panelists in this matter on January 16, 2012. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainant is a Mexican individual who founded a business named Solanum Laboratories in Mexico in 2003. Since that date the Complainant's business has carried out research, development and manufacture of human health products. The Complainant is the owner of a variety of Mexican registered trademarks for the word mark SOLANUM, the earliest registered of which is trademark number 901,941 registered on September 28, 2005 in class 5. The Complainant also owns a United States of America (“U.S.”) registered trademark for the word mark SOLANUM, namely number 3,780,014 registered on April 27, 2010 in international classes 5 and 35.
The Respondent's principal place of business is located in Massachusetts, U.S. Since 1999, the Respondent has developed a large portfolio of domain names incorporating common words and descriptive terms and phrases. Within this portfolio, the Respondent has registered a variety of domain names comprised of botanical genera. The disputed domain name was registered by the Respondent on March 17, 2006 after the previous registration of the same lapsed by reason of the previous registrant's failure to renew.
At the date of this Decision, the website associated with the disputed domain name consisted of a parking page which stated that the disputed domain name was for sale and provided hyperlinks described as “related searches” including “Resveratrol Juice”, “Colageno msm”, “Energy”, “Fusion” and “Best Resveratrol Brand”.
It is worth noting that while the Complaint was submitted in English it appears to have been prepared in another language and translated into English in a manner that is not entirely idiomatic. The Panel has nevertheless used its best efforts to interpret the Complainant's submissions and the following represents a summary of the Complainant's contentions as thus construed.
The Complainant contends that the disputed domain name is identical to a trademark in which it owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant asserts that the disputed domain name is identical to the Complainant's SOLANUM trademark and is confusingly similar to other trademarks registered by the Complainant which contain the word “Solanum” as their dominant element. The Complainant additionally points out that it has been the registrant of the Mexican country code domain name <solanum.com.mx> since June 25, 2003.
The Complainant maintains that the Respondent is not known by the name “Solanum” and that the Respondent neither has the Complainant's authorization, nor its trademark use license or franchise, to use that name. The Complainant states that there is no relation between the Respondent's name and the disputed domain name from which any right or legitimate interest can be inferred. The Complainant also asserts that the Respondent's name demonstrates that the Respondent's ultimate purpose is to resell domain names to the owners of registered trademarks such as the Complainant.
The Complainant submits that the Respondent registered the disputed domain name to use it in an improper way in connection with pay-per-click links with intent for personal economic gain. In addition, the Complainant asserts that the Respondent registered the disputed domain name with intent to sell it to the Complainant or a competitor, evidenced by the fact that the Respondent expressly offered the disputed domain name for sale and ultimately proposed a price for it in communication with the Complainant.
The Complainant asserts that the Respondent has used the term “solanum” in metatags hidden in its website code and notes that such use has been considered in previous cases under the Policy as proof of bad faith. The Complainant also submits that the Respondent uses promotional links on the website associated with the disputed domain name, with a view to receiving payments on a per-click basis and asserts that it is illicit for the Respondent to do this in connection with the Complainant's SOLANUM trademark. The Complainant notes that many decisions under the Policy have found such use to be consistent with bad faith.
The Complainant submits that the Respondent has made no demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods and services. The Complainant notes that non-use of a domain name can represent a bad faith use where it is impossible to believe that the domain name holder is unaware that the domain name is identical to a trademark. The Complainant also asserts that it is impossible to believe that the Respondent randomly selected the disputed domain name without awareness of its association with the Complainant. The Complainant states that this is even more evident because the disputed domain name was registered after the registration of the Complainant's primary trademark and country code domain name.
The Complainant submits that the Respondent registered the disputed domain name to disrupt the Complainant's business. The Complainant asserts that there is a possibility that the Complainant's customers could be confused by the Respondent's actions. The Complainant also states that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website.
The Respondent claims to have registered nearly 900 domain names comprising botanical genera and provides a list of some 30 of these. The Respondent states that it registers domain names that become available for registration through expiry and deletion and that its policy is to register and maintain only those domain names that incorporate common and/or generic dictionary words, phrases, acronyms, abbreviations and/or descriptive terms for which the available evidence suggests no single party has exclusive rights. The Respondent asserts that it offers visitors the opportunity to research or purchase garden designs, garden landscape, and garden tips on the website associated with the disputed domain name as visitors would expect from a domain name comprised of a botanical genus, together with products derived from or used in conjunction with extracts of plants of the solanum genus such as resveratrol or collagen.
The Respondent admits that it has listed the disputed domain name for sale however asserts that it did not register the disputed domain name for the purpose of selling it to any specific entity, or to Complainant in particular. The Respondent claims to have no knowledge of the Complainant nor of the Complainant's trademark when it registered the disputed domain name. The Respondent also states that upon registration of the disputed domain name it took several affirmative, pro-active steps to ensure its registration and use of the disputed domain name did not, and would not, impinge on any party’s trademark rights, namely the use of proprietary technology to screen domain names for conflicts with exclusively owned, descriptive or fanciful trademarks registered at the United States Patent and Trademark Office as well as those with a significant market presence on the Internet. The Respondent states that there are no links or advertising on the website associated with the disputed domain name which compete with the goods or services protected by the Complainant's trademark.
The Respondent asserts that it did not register the disputed domain name with the intent to disrupt the Complainant’s business, or to confuse consumers looking to access the Complainant’s domain names. The Respondent notes that the predominantly Spanish and German keywords in the Complainant's principal screenshot display keywords provided by Google and geo-targeted for foreign users, i.e., users accessing the disputed domain name outside the U.S. whereas the second screenshot is what users in the U.S. see when visiting the disputed domain name. The Respondent adds that it cannot control from where a user access its sites. The Respondent states that both the German and Spanish keywords remain consistently non-infringing as with the Respondent’s use in the U.S.
The Respondent submits that the Complainant does not have exclusive rights to the word “solanum,” which is a generic dictionary term for a genus of plants that is used by both the Respondent and countless third parties to describe plants of that genus, or uses and products derived therefrom. The Respondent states that numerous third parties use the term “solanum” in its generic sense for, inter alia, the discussion of the plant genus or the sale of various supplement and extracts derived from solanum plants in various countries and across the U.S.
The Respondent states that it does not dispute that the mark SOLANUM and the disputed domain name <solanum.com> are essentially identical, but does dispute that the Complainant holds exclusive worldwide rights to the generic dictionary term “solanum” and further disputes that outside of Mexico, and possibly even within Mexico the mark has any strength as indicators of source vis-à-vis the Complainant. The Respondent states that the Complainant’s contention that the combined effect of its geographically remote use, foreign trademark registration, and late U.S. registration, is the wholesale removal of a common dictionary term describing a large and varied genus of plants from the universe of registrable domain names, grossly overstates both the object of trademark law and the scope of protections the Complainant’s trademark registrations provide.
The Respondent asserts that because the Respondent knew nothing of either the Complainant or its geographically remote use and/or registration of its mark, and because the Respondent could not have anticipated the Complainant's first use of the Complainant’s mark in the U.S., the Respondent could not have registered the disputed domain name with the intent to disrupt the Complainant’s business nor could the Respondent have registered the disputed domain name with the purpose of confusing consumers seeking to access one of the Complainant’s other domain names.
The Respondent states that it has rights and legitimate interests in the disputed domain name because “solanum” is no more than a generic dictionary word, the corresponding website of which the Respondent uses to provide visitors with horticultural links. The Respondent submits that common dictionary words as well as descriptive terms are legitimately subject to registration as domain names on a “first come, first served” basis. The Respondent notes that several UDRP panels have recognized the principle that the mere ownership of a domain name comprising a common dictionary word should, in and of itself, establish the owner’s rights and legitimate interest. The Respondent adds that even if “solanum” is not considered wholly generic it is a common term that is not a fanciful or “distinctive phrase” coined by the Complainant.
The Respondent states that “solanum” is by no means exclusively or even disproportionately associated with the Complainant’s business or any particular business and that, while the Complainant contends that the Respondent must have known of the commercial activity of the Complainant and its trademarks, neither the Complainant’s website nor its products appear within the first 100 Google search results for the term “solanum”. Moreover, even in Mexico, the Complainant’s company and/or products appear only eight times out of the first 100 Google search results.
The Respondent notes that while it is impossible to document with precision what Internet searches would have revealed more than five years ago when the Respondent registered the disputed domain name, it is more than likely that Internet searches in 2006 would resemble the current 100-to-0 margin of “solanum” third party vendors and educational entries to the Complainant for a query on the term seen today. The Respondent also submits that it remains likely that a query based in the Complainant’s own country in 2006 would have returned results similar to those returned today, with 92% of the first one hundred results returning “solanum” entries from parties other than the Complainant. The Respondent asserts that the fact that so many others have legitimately chosen to use the generic dictionary word is indicative of both its commonness and commercially attractive nature for offering products derived from plants in the solanum genus, rather than exclusively as a trademark.
The Respondent submits that its use of the disputed domain name falls within paragraph 4(c)(i) of the Policy in that it uses the disputed domain name in connection with the bona fide opportunity to research or purchase horticultural products and services. The Respondent adds that it is well-established that a gTLD name comprised of a common dictionary word used to sell what the dictionary word describes constitutes use in connection with a bona fide offering of goods. The Respondent states that it is likewise well established that the sale of domain names themselves constitutes a bona fide offering of goods and services where the Respondent is unaware of a party’s rights in a mark. The Respondent submits that there is no evidence that the Respondent had any knowledge of the Complainant’s trademark when it registered the disputed domain name, while on the contrary there is affirmative evidence that the Respondent did not. Finally, the Respondent asserts that its business activities have been consistently recognized as legitimate practices in more than a dozen prior proceedings under the Policy.
The Respondent states that there is nothing to indicate that the Respondent primarily registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor in violation of the Policy. The Respondent notes that the disputed domain name is offered for sale to the general public. The Respondent adds that the Respondent only informed the Complainant of the current, negotiable price of the disputed domain name after the Complainant repeatedly inquired about its price in addition to signing up to receive future offers and promotions. The Respondent asserts that the Complainant has proffered no evidence that, at the time the Respondent registered the disputed domain name in 2006, the Respondent had any knowledge of the Complainant’s geographically remote use of its mark in Mexico. The Respondent adds that the Complainant's use of its U.S. trademark is of no significance as no such use existed when the Respondent registered the disputed domain name. The Respondent states that there is no evidence that the Complainant, or anyone else, was targeted by the Respondent as there are substantial third party uses of the term “solanum”.
The Respondent asserts that the acquisition of deleted or expired domain names has been endorsed as a bona fide practice under the Policy, citing Vernons Pools Ltd. v. Vertical Axis, Inc., WIPO Case No. D2003-0041. The Respondent notes that the Complainant has registered two domain names, both of which incorporate its company name: <solanum.com.mx> and, on <solanumusa.com> and thus is not being prevented from reflecting its marks in domain names of its choice. The Respondent submits that the Respondent and the Complainant are not competitors in that the Complainant is in the business of health products and the Respondent is in the business of developing domain names. The Respondent states that it is not creating a likelihood of confusion with the business of the Complainant. The Respondent adds that the goods offered for sale on the Respondent's website are directly related to the dictionary definition of “solanum” and not to the Complainant, its trademarks or competitors.
The Respondent notes that the disputed domain name is wholly unafiliated with the Complainant's goodwill in that the Complainant's logo is absent from the website associated with the disputed domain name and the hyperlinked text informs each visitor that the said website is for sale, which is inconsistent with any origination, sponsorship or use of the Complainant. The Respondent states that the idea that there is any apparent connection between the Complainant's trademarks and the Respondent or the disputed domain name, or that the content of the website associated with the disputed domain name would be likely to confuse a solitary customer, is at best fanciful.
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant has provided evidence of its rights in its registered trademark SOLANUM. For the purposes of comparison between this trademark and the disputed domain name, the generic top level domain of the disputed domain name (“.com”) is disregarded on the grounds that this is required for technical reasons and is wholly generic. Accordingly, when the Complainant's trademark SOLANUM is compared to the disputed domain name <solanum.com> it is evident that the disputed domain name is identical to the Complainant's trademark.
The Respondent has stated that it does not dispute that the mark SOLANUM and the domain name <solanum.com> are essentially identical. While the Respondent goes on to question the strength of the Complainant's mark as having any value as an indicator of source vis-à-vis the Complainant, whether inside and outside Mexico, the apparent strength or reach of a trademark is not a relevant issue for determination in connection with paragraph 4(a)(i) of the Policy.
In these circumstances, the Panel finds that the disputed domain name is identical to the Complainant's SOLANUM trademark and thus that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in the disputed domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with sufficient evidence of rights or legitimate interests to rebut that prima facie case.
In the present dispute, the Panel is satisfied that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name based upon its submissions that the Respondent is not known by the name “Solanum”; the Respondent neither has the Complainant's authorization nor the Complainant’s license or franchise to use the disputed domain name; and there is no relation between the Respondent's name and the disputed domain name from which any right or legitimate interest can be inferred. The burden of production accordingly shifts to the Respondent.
The Respondent’s submissions focus squarely on the fact that it was making a bona fide offering of goods or services at the disputed domain name (within the meaning of paragraph 4(c)(i) of the Policy) via pay-per-click parking directly related to the generic nature and definition of the word which comprises the disputed domain name, namely “solanum”, a genus of plants. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (WIPO Overview 2.0) considers such a prospective defence at paragraph 2.6 which states:
“Panels have generally recognized that use of a domain name to post parking and landing pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a “bona fide offering of goods or services” [see also paragraph 3.8 below] or from “legitimate noncommercial or fair use” of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder. As an example of such permissible use, where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value (a result that PPC page operators can achieve by suppressing PPC advertising related to the trademark value of the word or phrase). By contrast, where such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion.”
The Panel in Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964 held that using domain names for advertising links can in certain circumstances represent legitimate interests for the purposes of paragraph 4(c) of the Policy, such as when:
“the respondent regularly engages in the business of using domain names to display advertising links;
the respondent makes good-faith efforts to avoid registering and using domain names that are identical or confusingly similar to marks held by others;
the domain name in question is a “dictionary word” or a generic or descriptive phrase;
the domain name is not identical or confusingly similar to a famous or distinctive trademark; and
there is no evidence that the respondent had actual knowledge of the complainant’s mark.”
In the present case, the Respondent provides a sworn statement averring that it is a professional domainer which regularly engages in the business of using domain names to display advertising links. It also provides evidence demonstrating that the disputed domain name is a dictionary word. Furthermore, there is neither any evidence that the disputed domain name is identical or confusingly similar to a famous or distinctive trademark nor that the Respondent had actual knowledge of the Complainant’s mark when it registered the disputed domain name. The Panel notes in addition that the advertising configured by the Respondent to appear on the website associated with the disputed domain name (at least when viewed from the Respondent’s jurisdiction) is related to the dictionary meaning of the word “solanum”, namely the relevant plants or extracts derived from them, and does not appear to relate to the trademark value of the Complainant's SOLANUM trademark.
Insofar as there may be any connection between the Complainant’s mark and the Respondent's website content, and it is not entirely clear from the Complainant’s submissions as to what, if any, connection is being averred, this may have resulted from automatic geo-location of the advertisements on the website associated with the disputed domain name. In the Panel’s view, in the absence of evidence to the contrary, the presence of geo-located advertisements on a respondent’s website, which generate a conflict with a complainant’s trademark in a particular territory, does not necessarily indicate that the respondent does not have rights or legitimate interests in a disputed domain name consisting of a dictionary word or common phrase, provided that the conflict can be shown to be wholly accidental, inadvertent and not intended by that respondent. Nevertheless, where geo-location technology does result in any such conflict, it will doubtless be in a respondent’s interests to take prompt action to resolve the issue once on notice as its failure to do so may in some circumstances give rise to an adverse inference regarding its original motivation in registering and using that domain name.
In terms of those factors enumerated in Media General Communications, Inc. v. Rarenames, WebReg, supra, it remains for the Panel to consider whether the Respondent has made good-faith efforts to avoid registering and using domain names that are identical or confusingly similar to marks held by others. The Respondent explains that it employs certain automated processes including checks on the United States Patent and Trademark Office database prior to effecting registrations of expiring domain names. Clearly such a check would not have disclosed the Complainant’s Mexican trademark and the Respondent also makes a convincing case that the most likely web searches would likewise not have resulted in its disclosure. The question then is whether these efforts are sufficient, given the heightened duty upon a professional domainer to carry out more extensive searches than would be expected of the ordinary registrant, as discussed in cases such as Media General Communications, Inc. v. Rarenames, WebReg, supra and mVisible Technologies Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141.
In the circumstances of the present case, given that the Respondent was seeking to register a dictionary word, albeit by automated means, the Panel considers that the Respondent’s actions can be considered to be sufficient good faith efforts to avoid the registration and use of a domain name that was identical to a mark held by another. This does not mean that the Panel considers that such efforts as were made in the present case would necessarily be deemed sufficient in every case involving the Respondent or similar professional domainers. Each such case will require to be considered on its own merits and in particular within the context of the domain name and trademark concerned, and the relative searches or other actions undertaken at the time of registration.
In all of the above circumstances, the Panel finds that the Respondent has rights or legitimate interests in the disputed domain name and accordingly that the requirements of paragraph 4(a)(ii) of the Policy have not been satisfied.
It is evident to the Panel that the word “solanum”, is a botanical genus of plants and thus a dictionary word which can be demonstrated to be in widespread usage on the Internet. Furthermore, it could not be said to be exclusively associated with the Complainant, its business or its trademarks. Absent such exclusivity, there is no evidence that the word “solanum” is strongly or even substantively associated with the Complainant’s trademark in the jurisdiction where the Respondent is based, namely the U.S. While the Complainant has recently registered a trademark in that jurisdiction, this was not in force when the Respondent registered the disputed domain name. The Respondent has, in its sworn statement, explained to the satisfaction of the Panel how and why it registered the disputed domain name and, most importantly, has insisted that it was unaware of the Complainant and did not have the Complainant’s Mexican trademarks in mind at the time when it registered the disputed domain name. The Complainant has placed no evidence before the Panel demonstrating or indicating that it is more probable than not that the Respondent had any such knowledge.
The Complainant focuses in particular on the fact that the Respondent has offered the disputed domain name for sale at a price in excess of its out of pocket costs associated with the registration of the domain name. The Panel takes the view that the Respondent's offering of the disputed domain name for sale in the present case does not constitute evidence of bad faith registration or use, given that the Respondent has put forward an entirely plausible explanation for its registration of the disputed domain name and there is no evidence before the Panel to indicate that the Respondent was targeting either the Complainant or its SOLANUM trademark thereby. It is possible in certain cases to infer such targeting where the mark itself is famous, well-known or inherently distinctive. However, there is no evidence that the Complainant’s trademark qualifies as such in the present case.
Neither the Complainant’s submissions regarding metatags in the Respondent’s website content nor the Complainant’s assertions relating to non-use of a domain name appear to the Panel to be applicable to the present case. The Complainant does not specify how and why the Respondent’s metatags are targeting the trademark sense of the Complainant’s SOLANUM mark as opposed to the dictionary word. Furthermore, the evidence does not show that the Respondent’s demonstrably active use of the disputed domain name for the placement of advertising could be considered to be “passive holding” as described in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
There being no other circumstances indicating registration and use in bad faith, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have not been satisfied.
For the foregoing reasons, the Complaint is denied.
Andrew D. S. Lothian
Presiding Panelist
Kiyoshi Tsuru
Panelist
David E. Sorkin
Panelist
Dated: January 25, 2012